Federal Circuit: 271(a) Does Not Include Joint Tortfeasor Liability

On remand from the Supreme Court, a divided Federal Circuit has rejected calls to expand the scope of direct infringement to include a wider allowance for joint-tortfeasors when parties collectively practice all of the elements of a claimed invention. Rather, according to the majority opinion authored by Judge Linn, “the statutory framework of 35 U.S.C. § 271 does not admit to the sweeping notions of common-law tort liability argued in this case.”

Thus, the law remains that a party will not be liable for practicing several steps in a patented method and knowingly encouraging or instructing others to perform the remaining steps. Here, the court distinguishes other situations such as a principal-agent relationship or a contractual arrangement where principal liability exist based upon the actions of the agent. The court also notes that it may – in the future – expand direct liability to include “joint enterprise liability” but that “this case is not the appropriate vehicle.”

Writing in dissent, Judge Moore argues that the majority opinion “divorces patent law from mainstream legal principles by refusing to accept that § 271(a) includes joint tortfeasor liability. The majority’s rule creates a gaping hole in what for centuries has been recognized as an actionable form of infringement.”

97 thoughts on “Federal Circuit: 271(a) Does Not Include Joint Tortfeasor Liability”

Is it possible to have said anything more offensive? So, since claims are supposed to be considered as a whole this opinions means that any invention where a portion of the invention can be given out to a customer to perform is no longer eligible. Or, it is eligible only if you write the claims in some bizzarro manner such as providing X to a third party to perform function Y.

I notice that a Google judge was the deciding factor (Hughes.) Thanks Obama.

Linn opinion is just torturous to read. Seriously? All they did was build the product, sell it, and provide manuals on how to use it. Seriously not joint tortfeasor?

I’ve rarely written product-by-process claims, as you have to infringe the process (of making) in order to infringe the product. To me, these are the claims of last resort (worse than multi-actor/system claims, and I don’t draft those unless there is no other way).

Steve, infringers will always find creative ways to avoid infringement with loopholes as big as the Federal Circuit allows.

The infringer bar is dancing with joy. They are winning every battle — in the courts, in Congress, everywhere. Reexaminations that force intervening rights. IPRs where the standard of proof is “reasonable likelihood” and where the PTO uses BRI. No injunctions. DJ’s on merely receiving an offer of license. And a congress inveigled into slaying mythical trolls at the behest of those who see the patent systems as a barrier to their monopolization and profit.

And the Federal Circuit seems to be on message as well. They too speak of the mythical troll and seem willing to throw out the baby with the bathwater.

Remove the lowest form of innovation from the patent system (i.e., the protection of information and information-processing logic with patents) and things will pretty much take care of themselves.

Otherwise there’s really no other alternative except to tighten up all other aspects of the system.

Nobody — except for a tiny tiny number of well-heeled entitled professional grifters — wants a system that encourages patent lawyers to become “innovators”. But that’s the system we’ll have as long as wordsmithing logical processes out of thin air is deemed equivalent to designing, testing and (most importantly) describing a the structure of a new chemical or apparatus.

MM, the Federal Circuit has been corrupting the patent system in so many ways for so long is it nearly impossible to list them all. They allowed pure software claims with their programmed computer claims, they allowed functional claiming, and they never saw an indefinite claim they did not like.

Couple this with a PTO who view applicants as their clients and not the public and we see a system out of control.

But the patent system does not have to be crippled to undo the damage caused by the Federal Circuit and by the negligent PTO. Genuine inventions need protection with simple, lost cost and speedy enforcement. The way it is going, nobody will be able to enforce their patents even when they claim inventions that are novel and unobvious. This is a pity as the patent system is essential for universities, start-ups and, of course, pharma.

Ned: The way it is going, nobody will be able to enforce their patents even when they claim inventions that are novel and unobvious.

I think that’s a hysterical reaction to a series of necessary corrections. People are enforcing their patents and obtaining licenses all the time, every day. There are thousands upon thousands of valid enforceable patents out there.

Are those patents worth a bit less now than they were five years ago? Maybe. It doesn’t take a rocket science to see that the overall effect of that modest devaluation on the economy is undetectable.

At this late date it should go without saying that the complete eradication of patents on information and information processing logic will, at worst, have no effect on “innovation” in those areas and will more likely result in increased innovation.

The “losers”, as well all know, will be the grifters and the wealthy members of the self-styled “innovation community” who never needed the handout granted to them in the first place (but boy did they ever feel entitled to them).

You forget that the grown up arts have been dealing with all kinds of onerous requirements that go far beyond any actions taken by the “Royal Nine” to reign in the craziness.

That’s why the grifters and trolls limit themselves pretty much solely to the information-processing realm for their monetizing schemes.

You also seem to have forgotten that it wasn’t a software company that turned off the “determine and infer” patent faucet. It was a clinic that was “innovating” its own determine and infer “methods.” Some commenters at the time reacted to that decision by expressing hope that Mayo’s victory would end up blowing up in Mayo’s face. Has that happened? Of course that hasn’t happened.

It’s all quite obvious where this is going. The patent system is going to be just fine. Certain players within that system are going to be ejected from the game. Just get used to the idea and try to come up with a reasonable, practical, implementable fall-back position because you’re going to need one. You’re also going to need a solid administrative framework and some thoughtful statutes. The judiciary is are going to get very tired of dancing on smoke and pretending that information logic and mathematical algorithms are structures. Watch and see.

You forget that other art units have been dealing with all kinds of onerous requirements (e.g., sequence listings), not to mention uniformly tighter international laws, for many years without nary more than a peep of protest here and there.

That’s why the grifters and trolls in the US limit themselves pretty much solely to the information-processing realm for their monetizing schemes.

You also seem to have forgotten that it wasn’t a software company that turned off the “determine and infer” patent faucet. It was a clinic that was “innovating” its own determine and infer “methods.” Some commenters at the time reacted to that decision by expressing hope that Mayo’s victory would end up blowing up in Mayo’s face. Has that happened? Of course that hasn’t happened.

It’s all quite obvious where these “trends” are headed. And the US patent system is going to be better off for it. “Stronger” is the most accurate term, I think. Yes, certain players operating within the present system are going to need to radically change their ways or be ejected from the game. Just get used to the idea and try to come up with a reasonable, practical, implementable fall-back position because you’re going to need one. You’re also going to need a solid administrative framework and some thoughtful statutes. The judiciary is are going to get very tired of dancing on smoke and pretending that information logic and mathematical algorithms are structures. Watch and see.

Equating your “philosophy” with “Tr011s” or “Grifters” or “lowest form” is exactly what Ned is complaining about – even if he does not recognize the tactics because he shares your end-view philosophies.

This is an aphorism without a whole lot of deep meaning in the context of the arc of changes we’ve been seeing since State Street Bank and a few other careless decisions put a bunch of incredibly junky patents into the hands of people who have too much money already.

“for a tiny tiny number of well-heeled entitled professional grifters”

Absolute rubbish – and more mere reflection of Malcolm’s duplicity, seeing as software is a form of innovation most accessible to the masses (and his ‘beloved’ small molecules and the ‘need’ for ‘but for’ rational is the stuff of the “well-heeled”)

For all Malcolm appears to cry out against the 1%s, his mantra is their siren song.

Ned writes: As observed by Moore, Congress could not have intended that one inducing direct infringement of of a method claim would be liable only if one induced a party to perform all the steps of a patented process but leave that inducing party completely free of infringement if instead that inducing party performs one or more steps, perhaps the critical steps, of the patented method while inducing another to perform one of the steps.

I agree Ned. So, basically what Lynn is saying is that he decided that he’d just rule based on policy, which of course is the last thing a judge should ever use to reach a decision.

Really? The other areas say that two unrelated individuals who, by themselves, do not cause any harm to anyone can be held jointly and severally liable to a third party? They don’t. What they find is that when there’s a harm then there are ways to assign liability to those that gave rise to the harm.

That’s the real problem here: there’s no harm. The only way you analogize the other areas of law is by first pretending it’s a patent infringement to sum up the non-infringing steps of a bunch of different actors.

Contrary to some of the more vocal opinions here, everyday life activities are not a series of patent infringements.

mmm, common sense tells us that people know how to split things up among different people to try and avoid something. Common sense tells us that if you let people avoid infringement by splitting things up that they will.

What is remarkable is how so many people on this blog and at the Fed. Cir. fail to see how hard it is –in general–to write a set of claims that can’t be easily designed around, or now, easily split up among different actors.

But think of all the jobs that would be created if we created a system where the opposite is true!

That’s the direction Prometheus wanted to take us. And a lot of “experts” backed ’em up on it. Nearly all of those “experts” just happened to be patent attorneys and they really didn’t appreciate people pointing out that remarkable coincidence.

“he only way you analogize the other areas of law is by first pretending it’s a patent infringement to sum up the non-infringing steps of a bunch of different actors.”

Unless of course, this is exactly patent infringement and no pretending is actually required.

And that is rather the point.

Instead, we have more patent profanity and more need to pay attorneys to scriven things into a twisted “single actor” mode, when some innovation DOES come in the form of multiple actor actions.

Look at it this way: Lemley was instrumental in the AIA pushing his “it takes a village to invent” mindset. It is perfectly natural that if it takes a village to invent, then the corollary that some innovations may also require “a village.”

By forcing the contrivance of “single actor,” you actually create more need for attorneys and their ability to scriven.

If you’re suggesting that there are eligible “innovations” that can’t be described in a manner that can be infringed by a single actor, it’d be helpful if you provided a few examples that people actually care about.

By forcing the contrivance of “single actor,” you actually create more need for attorneys and their ability to scriven.

Please define what you mean by “scriven” in this context and give an example.

There is a difference between wordsmithing in an attempt to avoid the easy application of the statutes, on one hand ( a practice generally frowned upon), and not being lazy on the other hand (a practice generally applauded). Because it’s always been the case that claims likely to be directly infringed by a single actor are vastly preferred over other kinds of claims, most diligent, thoughtful and forward-looking practitioners are not going to need to change their claim drafting habits.

Seeing as you have shown no understanding of the “easy application of the statutes” I’m your opinion/policy drenched diatribes (one option of claim form as the only form, for example), your statement here is more a reflection of your duplicity than anything else.

This is how the game is played. Or at least it’s how the Most Important People Ever — the self-described “innovation community” aka the “real people” (LOL) who never saw a patent they couldn’t embrace — desperately want the game to be played.

And those of us who object? Why, we’re all just “jealous” luddites and commies. Or so we’ve been told.

I think I might have mentioned this to you once or twice over the many years, “anon”: the wind is blowing in one direction since State Street Bank and it ain’t ever going to blow back.

To the extent that there is a tiny entitled group of impossibly whiny people out there who desperately want patent litigation to become a way of life for every person or business in the country, that tiny entitled group is going to see itself increasingly marginalized and mocked.

The Supreme Court was right when it observed that the Federal Circuit does not understand the law of infringement. Congress simply did not intend to change the law of infringement in enacting 271(a), (b) and (c).

As observed by Moore, Congress could not have intended that one inducing direct infringement of of a method claim would be liable only if one induced a party to perform all the steps of a patented process but leave that inducing party completely free of infringement if instead that inducing party performs one or more steps, perhaps the critical steps, of the patented method while inducing another to perform one of the steps.

As observed by Moore, BMC Resources was a decision without precedent. How could a decision without precedent be consistent with the idea that Congress intended to codify in 271(a) the law of infringement. The idea that 271(b) and (c) were intended to be limits on direct infringement is without support anywhere in the legislative history. Rather, these statues were intended to codify the law of contributory and inducement infringement because they were put into question in such cases as Mercoid. Thus they apply when another party is a direct infringer and another induces or participates by supplying a non staple. But they do change the law of direct infringement nor should they be interpreted in a manner to undo Congress’s intent.

The majority continues the heresy enunciated by BMC Resources that “whoever” by itself can only be construed to mean a single actor. That is not proper construction of the statute because “whoever” is intended to include both the singular and plural persons.

All in all, the majority decision here is among the worst decision I have ever seen in patent law. But let us not forget who caused this chaos. Rader was the author of BMC Resources (divided infringement of that the claims is not infringement), his dissent in Bilski which was adopted by the majority the Supreme Court (the claims in Bilski were “abstract” without bothering to define what that meant), and of Valmont Industries Industries (the case that wrecked means plus function claims). Perhaps it is time to consider honoring Rader with a special award from the AIPLA for job well done.

MM, not really. Look at Univis Lens and image that a process patent covered every step in the process from grinding blanks to finishing the lens blanks according to a prescription. Assume the last step was completely old, but was required to produce finished lenses.

Now consider that A grinds lens blanks, and B finishes them. A and B operate at arms length.

Under BMC Resources, and here, no one would be liable for infringement because of the inclusion of the perfunctory final step in the claim. Had that been left of, the A would be the infringer. Why should the result change by inclusion in the claim of a conventional step performed by third parties where the novel steps are performed by the one party?

If your “innovative” method is something that can’t be protected with such a patent claim, then your “innovation” is almost certainly something that doesn’t deserve a patent or shouldn’t be protectable in the first place by a sane and healthy patent system.

MM, on the contrary, the Supreme Court developed the doctrine of equivalents in order to find liable those who would avoid infringement by using evasions. The Supreme Court will not here condone the literalism of the Federal Circuit to allow infringers who appropriate to themselves the substance of the patented invention to evade liability.

Congress did not intend to change the law of infringement in enacting 271(a). BMC Resources is a case without support in the case law, and is inconsistent with the whole trend of infringement law prior to 1952. 271(b) and (a) should be viewed as additional remedies where an infringer does not participate directly in the infringement. They should not be construed in any other way.

Maybe instead of vapid and empty cheerleading, you might add a little to the discussion – for example, perhaps why you feel this is such a “terrible idea”…

As it is, all that you are doing my dear friend is reaffirming your anti-patent bias. So while you continue to be polite about the manner of your posts, the timing and more importantly the context of your posts continue to decrease your credibility.

In my opinion, you’re trivializing the issues in that case. It’s a difficult set of issues involving chemicals so complex they had to resort to methods for making them or peaks in powder X-ray diffraction to describe them.

While I’m not sure I agree with Newman’s analysis, I see her concerns.

It doesn’t make sense to add an “old step” for obfuscation or to make it more difficult to make 102/103 arguments. If it is apparent that it is an “old step,” then how is that obfuscating? Also, if it is apparent that it is an “old step” then how can that make it more difficult to make 102/103 arguments?

Busho: If it is apparent that it is an “old step,” then how is that obfuscating? Also, if it is apparent that it is an “old step” then how can that make it more difficult to make 102/103 arguments?

First, it’s not always “apparent” to everyone that the old steps are, in fact, old. That’s particularly true when a silly “tech” term is invented to make the old step (usually a logic step) appear to be “new”.

Second, each old step needs to be addressed by the Examiner performing a 103 analysis. An obviousness argument against a claim with thirty five old steps is pretty much always going to take more time and effort than a claim with 2 old steps.

And therein lies the rub. Any halfway decent attorney (in addition to an army of incompetent attorneys) can describe any process in 1000 words or more. For example, take the process of observing a customer walking into a store, profiling that customer, and approaching the customer to shake the customers hand and provide the customer with a recommendation about a purchase that might interest the customer based on the profiling that just took place. That’s ancient stuff, of course. But think about all the intermediate “steps” that are necessarily involved and you can turn that simple process into a novella. This is how the game is played, especially when a shiny compooting device is involved and suddenly what was once plainly ineligible logic becomes “techno” in our broken patent system.